Appeal No. 2006-2172
Application No. 10/685,270
Our review of the disclosure of Xiang reveals that, while Xiang may use a concentric
spectrometer, the disclosure of Xiang is directed to the dispersing of spectra from an image
of a scene. The problem addressed by Xiang, however, i.e., the need to prevent the
overlapping of adjacent spectral images, referred to by Xiang as a “keystoning” effect
resulting in a loss of resolution, does not exist in the optical communication system of
Dragone. While the Examiner attempts (Answer, page 4) to equate the “crosstalk” reduction
problem addressed by Dragone with the “keystoning” problem addressed by Xiang, we find
no evidence forthcoming from the Examiner that would support the conclusion that the
ordinarily skilled artisan would recognize and appreciate the correspondence between
“crosstalk” reduction and “keystoning effect” reduction.
The Examiner must not only make requisite findings, based on the evidence of
record, but must also explain the reasoning by which the findings are deemed to support the
asserted conclusion. See In re Lee, 277 F.3d at 1344, 61 USPQ2d at 1434. In our view,
given the disparity of problems addressed by the applied prior art references, and the
differing solutions proposed by them, any attempt to combine them in the manner proposed
by the Examiner could only come from Appellants’ own disclosure and not from any
teaching or suggestion in the references themselves.
In view of the above discussion, since we are of the opinion that the proposed
combination of the Dragone and Xiang references set forth by the Examiner does not support
the obviousness rejection, we do not sustain the rejection of independent claims 1, 6, and 8,
nor of claims 2-5, 7, and 9 dependent thereon.
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